Clear Channel Communications, Inc v. Russx Casting Company aka ForSale
Claim Number: FA0109000100145
Complainant is Clear Channel Communications, Inc., San Antonio, TX ("Complainant") represented by Pamela B. Huff, of Cox & Smith Incorporated. Respondent is Russx Casting Company aka ForSale, RUSSIA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kvuu.com> and <wgir.com>, registered with BulkRegister, Dotster.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 27, 2001; the Forum received a hard copy of the Complaint on October 1, 2001.
On October 2, 2001, BulkRegister, Dotster confirmed by e-mail to the Forum that the domain names <kvuu.com> and <wgir.com> are registered with BulkRegister, Dotster and that Respondent is the current registrant of the name. BulkRegister and Dotster have verified that Respondent is bound by the BulkRegister and Dotster registration agreements and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 8, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 29, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org and email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On November 8, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain names be transferred from the Respondent to the Complainant.
The <kvuu.com> and <wgir.com> domain names are identical to Complainant's KVUU and WGIR trademarks.
Respondent has no rights and legitimate interests in the disputed domain names.
The disputed domain name has been registered and used in bad faith.
The Respondent failed to submit a Response.
Since 1983, Complainant has used the call letters KVUU and WGIR for its AM and FM frequency radio stations. The station identifiers were assigned by the Federal Communication Commission and have been used continuously since issue November 1983. Complainant through use has acquired common law rights in the call letters as a trademark. Complainant has expended substantial sums of money over the last two decades in order to establish public recognition of the marks through advertising, Internet, and other promotional materials. As a result of these promotional efforts Complainant has established substantial customer recognition of KVUU and WGIR trademarks.
Respondent registered the disputed domain names on April 19, 2001. When the Internet user visits the domain names they are offered links to various pornography websites. The Respondent's website at the domain names offers both domain names for sale.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant, through continuous and extensive use has established common law rights in the KVUU and WGIR marks. Furthermore, Respondents <kvuu.com> and <wgir.com> domain names are identical to Complainant's marks because they incorporate the entirety of the marks and merely add a top-level indicator. It has been found that the addition of a top level indicator such as ".com" or ".org" does not create a distinct mark. See World Wrestling Fed'n Entm't., Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (finding that "[t]he addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish those names from Complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent"); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as ".net" or ".com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward with a response and therefore it is presumed that Respondent has no rights or legitimate interests in the <kvuu.com> and <wgir.com> domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to submit a response the Panel is permitted to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint").
Respondent has linked the disputed domain names to various pornographic websites. It has been found that this type of use does not create rights or legitimate interests. See National Football League Prop., Inc., et al. v. One Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent has no rights or legitimate interests in the domain names "chargergirls.com" and "chargergirls.net" where the Respondent linked these domain names to its pornographic website); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well known mark to provide a link to a pornographic site is not a legitimate or fair use).
Furthermore, there is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <kvuu.com> and <wgir.com> domain names pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
Respondent is not providing bona fide goods or services by using the disputed domain names as links to sexually explicit material. The use of a domain name which is identical to Complainant's mark for commercial gain does not create rights or legitimate interests. See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish the Complainant’s mark).
Furthermore, Respondent's offer to sell the disputed domain names on its website does not create rights and legitimate interests in the disputed domain names. See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent has demonstrated bad faith registration and use because Respondent has used the disputed domain names solely for the purpose of commercial gain by diverting Internet users to unrelated pornographic sites. See Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).
Furthermore, Respondent's offer to sell the domain names on its website is evidence of bad faith. See Educational Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith); see also American Anti-Vivisection Soc’y v. "Infa dot Net" Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that "general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith").
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain names <kvuu.com> and <wgir.com> be transferred from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY ( Ret.)
Dated: November 16, 2001
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